The Court of Appeals for the First Circuit affirmed that the hospital was the owner of the trademarks. Greene conceded that the Massachusetts General Hospital IP Policy was broad enough to cover the trademarks he adopted and used for a program associated with MGH. The court rejected his contract defenses of equitable estoppel, failure to reach a meeting of the minds and unilateral mistake.

There is a pair of interesting decisions out of the District of Massachusetts about ownership of the marks “Collaborative Problem Solving,” “Collaborative Problem Solving Approach” (the “CPS Marks”), “Think:Kids” and “Think:Kids: Rethinking Challenging Kids” (the “Think:Kids” Marks). “Interesting” because it is a case where marks that preexisted a business relationship were lost by signing an employment agreement.

The “Collaborative Problem Solving Approach” is a treatment approach for resolving problems between children with social, emotional and behavioral challenges and their caregivers. Plaintiff Ross Greene developed it in 1993. Also in 1993, he began working part-time as a clinical assistant in psychology at Massachusetts General Hospital (MGH) using the CPS approach as part of his outpatient therapy work. He successfully reapplied for his position ten times, the last time in 2007, repeatedly signing agreements that he would abide by MGH’s policies and in later agreements also stating that he had read the policies. The case is more complicated than just the Greene-MGH dispute; there is also a copyright dispute between Greene and the name defendant J. Stuart Ablon that I won’t go in to.

In 2001 Greene registered “Collaborative Problem Solving Approach” on the Supplemental Register. In 2002, he and Ablon founded the “Collaborative Problem Solving Institute at MGH” (the “Institute”) as part of MGH’s Department of Psychiatry. In the same time period Greene and Ablon also founded two entities not affiliated with MGH that later merged into the surviving “Center for Collaborative Problem Solving, Inc.”

The Ablon-Greene relationship ultimately fell apart, with Ablon remaining at the Institute and Greene terminated by MGH in January, 2009. And so we argue over who owns the marks.

MGH adopted an intellectual property policy in 1995 (after Greene was already employed by MGH), which was revised in 2002. Greene argued that the policies didn’t apply to him because he started at MGH before the IP policies were adopted, but his repeated reapplications for his position subjected him to the policies. This is the relevant language in the policies:

1995 IP Policy

[t]rademarks shall be owned by MGH if they are created by Members in the course of their employment or affiliation with an Institution or if they are used to identify any product or service originating with or associated with an Institution ….

2002 IP Policy

[t]rademarks shall be owned by an Institution if they are created by Members in the course of their employment or affiliation with an Institution, if they are used to identify any product or service originating with or associated with an Institution, or pertain to significant Institutional Activities.

The court had no problem concluding that Greene’s applications incorporated the IP policies by reference and that under these policies MGH would own the CPS Marks and Think:Kids Marks–I commend you to the decision if you’re interested in the analysis. Note that it doesn’t matter that the CPS Marks may have preexisted Greene’s employment by MGH; the language “associated with” clearly captures marks that existed before the relationship. Be careful what you sign.

The second decision is slightly more interesting. It was on MGH’s motion to enjoin Greene from claiming ownership of and using the CPS marks (Greene’s website here). Greene argued that MGH had to demonstrate a likelihood of success that there is likelihood of confusion, which would also require that MGH prove that the marks have secondary meaning (recall that Greene was only able to register the Collaborative Problem Solving Approach mark on the Supplemental Register). I agree with Greene–the statutory claim is for trademark infringement, there is no separate claim for declaration of ownership in the Lanham Act.

But the court disagreed. The court held

This is not a matter of trademark infringement, but of the rights that Greene surrendered to MGH as a result of his prior employment contracts …. In other words, whether MGH can successfully bring a trademark infringement suit against Greene or anyone else is a different matter from whether Greene contractually is restricted from suing or claiming ownership of the marks ….

The court relied on Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 101-03 (2nd Cir. 1989) for the proposition that it didn’t need to address confusion. In Murphy Door Bed, the court found that “Murphy Bed” was generic but nevertheless enjoined the distributor from using the term because the terms of the distributor agreement prohibited it. The Greene court conveniently overlooked, though, that the MGH policies didn’t address use, only ownership.

But it doesn’t really matter in the end; they were arguing about ownership of the same mark so confusion is, in my book, per se. I’m sure that’s what the court meant.

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Ms. Chestek is admitted to practice in Connecticut, the District of Columbia, Massachusetts, New York and North Carolina and is Board Certified by the North Carolina State Bar's Board of Legal Specialization in Trademark Law.

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